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Narrower trademark descriptions are coming to Europe

December 2, 2019

In October 2019, Advocate General (AG) Evgeni Tanchev to the Court of Justice for the European Union (CJEU) issued an opinion in the Sky v. SkyKick case (Case C-371/18) (see link to Curia).  As the CJEU tends to follow an AG's opinion, this opinion could change European trademark attorney practice.

The facts and procedural history are complicated.  Distilled down, Sky obtained a trademark registration that covered "computer software".  Sky started to enforce its trademark against SkyKick.  SkyKick argued that the descriptions were too broad and therefore the registrations were invalid. The court referred the matter to the CJEU.

In his opinion, the AG found support for SkyKick's argument that broad descriptions were against public policy because "A term such as ‘computer software’ is too general and covers goods and services which are too variable to be compatible with the trade mark’s function as an indication of origin for that term to be sufficiently clear and precise to enable the competent authorities and third parties to determine on the basis of that term alone the extent of the protection conferred by the trade mark." (Opinion at para. 143).  The AG also states that there is no reason why his reasoning does not apply "machines", "telecommunication services" or "financial services" (Opinion at para. 81).

If the CJEU endorses the AG's position, European trademark practice will change and become similar to US practice where broad descriptions have been long unacceptable.

Image by Mabel Yeap from Pixabay

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